New Tool! ThorCheck Custom Search

Class-Based and Keyword-Driven Comparative Research

ThorCheck is a great, unique tool for comparative research. The first iteration, and still the most commonly-used, helps you identify active, use-based registrations for the same mark for two different sets of goods, e.g. trailers and trucks. In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015). It saves hours or even days of manual research, and has helped hundreds of applicants prevail over difficult related-goods refusals.

The original ThorCheck Goods and Services tool is still your best option for most goods/services comparative research, but was less adept at two kinds of searching.

The first was for class based comparisons – finding overlap between, say, a food in Class 29 or beverage in Class 32 and a restaurant service in Class 43, or between a pharmaceutical in Class 10 and a medical service provider in Class 44. Any evidence of that type of overlap is potentially valuable, and ThorCheck’s emphasis on individual goods or services didn’t allow for easy “general” comparisons like this.

The second was for highly varied goods and services, like software – give the same description of a hospital-focused SAAS to ten different trademark lawyers, you’ll get ten different descriptions of services.

The new Custom option solves both sets of problems.

Class-Based Comparisons

Setting up a custom search is easy – just pick one class in First Party Trademark Criteria and the other in Second Party Trademark Criteria. As always with ThorCheck, your results are limited to active, use-based registrations.

Exporting a summary chart and TSDR status and title copies is as easy as always; just tag relevant results and export to Word or Excel, or select up to 100 records to get TSDR status and title copies at a go.

What if you’re the senior party, and want evidence that cosmetics are related to more industrial chemicals? Just pick Class 1 and 3 respectively, and change the Evidence option to “Similarity,” as shown below.

Keyword-Driven Goods and Services Comparisons

Custom goods and services ThorCheck search strategies look a little more complicated, but they are conceptually simple: come up with two sets of search strategies that identify either different (Dissimilarity option) or overlapping (Similarity option) universes of marks. ThorCheck will put all the pieces together, lining up identical marks with either different owners (Dissimilarity option) or identical owners (Similarity option).

Let’s do an example. Say your client offers industrial software for running oil, gas, and mining operations. A prior registration for software in the HR space has been cited as a bar to registration, with the Examining Attorney taking the position that part of running industrial operations is dealing with HR issues. You plan to argue channels of trade and that the users of the software are different, but would love to have evidence to attack the relatedness of the goods directly. ThorCheck can provide it. We want to limit both First Party and Second Party criteria to Class 9 and 42. On the First Party Criteria, we want to pair software-related keywords with keywords like mining, oil, gas, and industrial. One the Second Party Criteria, we want to pair those same software keywords with either the phrase “human resources” or the term “HR.” The search strategy looks like this:

The results speak for themselves – dozens of examples of just this sort of overlap. A sampling of the representative results are attached, and it’s only a fraction of the evidence surfaced by ThorCheck. (The Word formatting doesn’t carry over to the blog great, so some details have been truncated for readability.)

OwnerGoods/ServicesMarkMarkGoods/ServicesOwner
Illinois Tool Works Inc.009
business management software, namely, project management software for truss fabrication projects in the business component industry
HOMEBASE
Reg: 2803070
HOMEBASE
Reg: 4694369
009 042
software for human resources and labor management for employee communications, scheduling, task management, payroll, hiring, accounting, alerts, messaging, compliance, timesheets, reviews and feedback (…)
Pioneer Works, Inc.
Epicor Software Corporation009
computer software for use in the made-to-order or custom manufacturing industry (…)
VISTA
Reg: 2895370
VISTA
Reg: 5387674
009
computer software for use in human resource management, in maintaining personnel and benefits records, and in processing payrolls
Personnel Data Systems, Inc.
DBA PDS
Rosemount Inc.037 042
technical support services, namely, troubleshooting of industrial process control computer software problems; installation of computer software for industrial process control systems
SMARTSTART
Reg: 3544081
SMARTSTART
Reg: 4969661
038 042
(…) application service provider (…) in the fields of (…) human resources, (…)
Smartstory Technologies, Inc.
TSI Incorporated009
computer interface units and computer programs for use with gas or liquid flow measurement apparatus (…)
TSI
Reg: 3651680
TSI
Reg: 4096817
009 041
educational computer programs (…) used to teach persons (…) human resources (…)
NACD, LLC
Advanced Digital Data, Inc.009
business management software that allows customers (…) to check their account status (…) in the petroleum products industry
SMARTCONNECT
Reg: 3124058
SMARTCONNECT
Reg: 5770389
042
provision of cloud computing (…) services (…) in the fields of payroll, tax, compliance, human resources (…)
ADP, LLC
Carrier Logistics Inc.009
computer software for freight management in the transportation industry
FACTS
Reg: 3074116
FACTS
Reg: 5645276
042
(…) on-line non-downloadable software that allows consumers to manage human resources information, (…)
Criterion Inc.

Please enjoy our new class-based and keyword-based research options in ThorCheck, and keep the success stories coming! We love to hear how ThorCheck has helped your practice. Also, please tell your fellow trademark attorneys – word of mouth recommendations mean a lot to us.

Digitally Altered Specimen Refusals – By the Numbers

The US Patent & Trademark Office just came out with a new Examination Guide covering digitally altered specimens. Examination Guide 3-19 Examination of Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens (USPTO, July 2019).

TM TKO has full, searchable prosecution histories as a part of the research platform, so I searched for any Office Actions related to this type of refusal. Although the Examination Guide is new, the refusal is not – it really started appearing in 2015, when the refusal was made about 1,000 times, and the refusal rates has continued to spike in each year since; 2019 is on pace for over 20,000 refusals. Since 2016, more than half of these refusals have been issued to Chinese applicants. However, a surprisingly small number of refusals have, to date, “held up” and resulted in the abandonment of the application – about 70% of the applications that have been finally disposed of have moved forward to registration, a far higher figure that I would have expected.

This raises interesting questions about what sort of conduct should result in an application being invalid. The “fraud” line of cases, like Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), was killed extremely dead via Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007). The Board has, as a result, been very unwilling to expand revisit the idea of “fraud,” even where the applicant provided a demonstrably false specimen – deceptive intent is required, and so long as the applicant doesn’t say they had deceptive intent, they’re pretty much going to get off the hook. Tommie Copper IP, Inc. v. Gcool-Tech Usa LLC, Opposition No. 91223768 (May 9, 2018) [not precedential]. That a use-based application might be void ab initio due to non-use as of the use date claim might still be tenable, e.g., Parametric Technology Corporation v. PLMIC, LLC, Opposition No. 91174641 and PLMIC, LLC v. Parametric Technology Corporation, Opposition No. 91177168 (February 12, 2010) [not precedential], but the case law seems pretty clear that an applicant that knowingly submits a fake specimen and then cures with a real one prior to registration is basically going to be fine.

On the one hand, if the applicant ultimately can show that it is making real, in-commerce use of the mark, where’s the harm? The applicant got it right eventually and, for the purposes of having a registry that reflects reality, well, it does. On the other hand, there’s some real skepticism in the practice community that the specimens that are eventually accepted are actually real – that, instead, they’re just better fakes. Why would you fake something if you have a real product or service, after all?

Some practitioners take the position that the verified statement of the applicant should be taken at face value. I do not agree. If a simple Google Images or Tineye search can find the original photo that was doctored to match, or it’s otherwise equally blatant (a McDonald’s restaurant photo with “Mary’s Burgers” badly edited in place of “McDonald’s”), I see no reason why the USPTO should have to turn off its brain when examining specimens and ignore obvious fakes.

Represented vs. Unrepresented Applicants

How does being represented by an attorney impact the rate at which these refusals are issued, and the how does it impact the rates at which the refusals are overcome? The data for these queries treats pro se applicants who later add an attorney as “represented.”

Chinese Applicants

It is widely understood in the trademark practitioner community that a significant driver of these refusals are applications with Chinese applicants. That is definitely true – 45% or more of these refusals each year since 2016 are for Chinese applicants. Chinese applicants as a group overcome these refusals at a rate that is better than the norm. Chinese applicants have better success rates than unrepresented parties, although less than all represented parties do.

The issue of digitally altered specimens will undoubtedly continue to grow over time, as the technology becomes ever more omnipresent and the USPTO continues to work to implement its new Examination Guide. As always, TM TKO will be your best resource to research how the Office and other lawyers are addressing these kinds of refusals.

New! Trademark Portfolios

TM TKO is excited to release a new concept – Portfolios. You can set up Portfolios for your firm, yourself, and key clients’ competitors, with built-in conflict checking and automated watch setup. Watch includes published applications, 2(d) cite watching, and more, helping you protect your existing clients and generate complex, high-value work for your practice.

Setting up a Portfolio takes under a minute – just go to the Portfolio page! For instructions, go to the Portfolio help page.

Firm & Competitor Conflicts

Track your entire firm’s trademark portfolio, to help identify representational conflicts in clearance searches.

Set up portfolios for your key clients’ main competitors, so those results are highlighted in your clearance results.

Hassle-free Watching

Set up an attorney portfolio, and TM TKO will keep your watches updated for you as your client base changes – no effort required. If you are only watching a small fraction of your client’s marks, you are missing out on dozens of opportunities each year to protect your clients and generate more, high-value billable work for your practice.

Included:

  • confusingly similar new applications;
  • confusingly similar applications newly published for opposition;
  • 2(d) citations of your clients’ marks against other applications;
  • marks published over a 2(d) cite to a client mark;
  • automated Office Action Analysis for any inbound Office Actions, and more.

With Portfolios from TM TKO, you can do a better job avoiding conflicts, highlighting competitive risks, and protecting and developing more work from your existing clients. If you would like a hand setting up or using the full power of Portfolios, just email us at support@tmtko.com and we will set up a web meeting.

What’s Going to Follow Brunetti?

The US Supreme Court has, as you’ve doubtless read a million articles about already, struck down the Section 2(a) bar on registration of “immoral [] or scandalous matter.” Iancu v. Brunetti, ___ U.S. ___ (2019). It was no surprise to anyone who had read Matal v. Tam, the 2018 decision finding the 2(a) bar on disparaging matter to be unconstitutional. 582 U.S. ___ (2017).

This blog post will take a more practical look at what applications will be impacted, using TM TKO’s searchable issue tagging.

More than five hundred applications that are currently suspended based awaiting issuance of the Brunetti decision. The following numbers show the common terms that have resulted in suspensions, and include more easily-searched spelling variations.

Fuck and variants – 173

Shit and variants – 59

Breast-related – 16

Penis-related – 71

Vagina-related – 36

Butt-related – 17

Quite a few more related to specific sex acts, although there’s too much variation for easy enough searching for the purposes of this blog post.

A bit under half of the suspended applications do not have counsel; those applicants represented by counsel were somewhat more likely than the unrepresented applicants were more likely to have multiple applications suspended awaiting the Brunetti decision.

There does not appear to have been a land rush to file new applications for offensive – yet. Application data can take a few days to a week to filter into the USPTO data set, so it’s possible that there has in fact been a profane land rush that will become apparent over the next few days.

Tracking an Industry – Real Estate

Trademark filings can be an interesting lens to look at an entire industry. Today, we’ll look at real estate. It had a huge rise in the 2000s as housing prices boomed, then the subprime mortgage crisis hit the industry hard from 2007 – 2010.

Trademark filing trends track the rise, fall, and slow return of the industry surprisingly well. I looked at 4 main classes – Class 9 (apps), 35 (), 36 (), and 42 (hosted software). Filing trends for each largely match up, although Class 36 is both the most common class for applications and has seen the most proportionate growth in the post-2013 rebound.

The filing uptick before 2007 is clear, and followed by the sharp, recession-induced tail that we would expect. Filings were static though 2013, and started to rebound. Class 9 and 42 (apps and websites) are the least common, which may make sense given the additional technological investment required. Class 35 (real estate sales and marketing services) were more common, and Class 36 (listing and brokerage services) by far the most.

It’s not quite clear why Class 36 applications have spiked more than other classes over the last three years. I suspected that it might be a rise in foreign applicants, especially from China, but that is not a meaningful factor.

It is interesting that trademark filings have jumped more than actual US home sales – sales dropped from more than 7 million in 2005 to a low of 4.1 million in 2008 and 2010; sales have only rebounded to around 5.5 million per year in 2017-2018.

Fire, Ice, and Trademark Protection

With HBO’s hit adaptation of George R.R. Martin’s A Song of Fire and Ice drawing to a close, Game of Thrones has a trademark portfolio and enforcement budget to match its cultural status.

Trademark Portfolio

We’ll just look at HBO’s US portfolio, headed by in-house counsel Judy McCool. At the time of writing, HBO has just over four hundred and fifty active applications and registrations in its entire portfolio, and more than seventy relate to Game of Thrones – about 15% of HBO’s entire US portfolio.

The title Game of Thrones or variations account for just over half of the total filings, and cover everything from DVDs to spinoff games to slot machines, clothing, action figures, watches, food and booze, and even swords. The rest of the filings are scattered between character-specific marks like KHALEESHI for makeup and HODOR for clothing to plot-driven marks like THE LONG NIGHT and WINTER is coming. There are also a handful of more random filings like HAND OF THE QUEEN for alcoholic beverages and clearly the strangest, MILK OF THE POPPY for clothing and mugs (!).

Enforcement Efforts at the TTAB

HBO’s Trademark Trial and Appeal Board enforcement team, led by Tamara Carmichael of Olshan, also has its hands full. It has taken extensions of time to oppose or opposed dozens of applications by third parties, most related to the Game of Thrones title itself.

  • 7 ongoing extensions
  • 15 withdrawn applications
  • 10 defaults after opposition (most were unrepresented foreign applicants)
  • 1 registration cancelled
  • 2 amended applications
  • 2 did not oppose

Three of HBO’s applications were also opposed or subject to extensions; filings for GAME OF THRONES went through to registration, while HBO dropped applications for DROGON and THREE EYED RAVEN for alcoholic beverages.

Yr Mark Ser. No. or
TTAB No.
Company Outcome
2019 H & HODOR 87622127 Shang Hai Fei Win Wu Liu You Xian Gong Si New extension
2019 DINNER IS COMING 88020149 Mohammad Said New extension
2019 GAME OF CONES 88101606 Beauty Bakerie Cosmetics
Brand, Inc.
New extension
2019 QUEEN OF THRONES 91246195 Sanas Health Practice Ltd. Amended to Queen of the Thrones
2019 PETER COUTURE 88027937 Peter Couture New extension
2019 GAME OF PWNS 88149316 and 88149338 Daniel Alotta New extension
2018 GAME OF KINGS 91244837 IGG Singapore Pte. Ltd. Consented extensions
2018 KALESIAH 87957584 Kaleesiah LLC Second extension
2018 KELISI 88086223 QKZ Design Did not oppose
2018 GAME OF THORNS 91244050 The Trustees of the Rancho Santa Ana Botanic Garden. Withdrawal of applications
2018 DRACARYS 92069511 Hangzhou Wanray Imp. &Exp. Co. Ltd. Registration cancelled
2018 HOLDOOR 87783126 Foshan Handu Technology Co., Ltd. Did not oppose
2018 DRACARYS 91242953 Ultra Pro International, LLC Suspended
2018 WINTER IS COMING 91242291 Purple Wine Company Default
2018 CON OF THRONES 91241541 Mischief Management, LLC Withdrawal of application
2018 NIGHTKING 91240578 Yiwu Chuangyue E-commerce Co., Ltd. Default
2018 GAME OF ROOMS 91240453 Andrew Ma Amended to A Game of Rooms
2018 SLOT OF THRONES 91240418 Huuuge Global Limited Default
2018 GAME OF SEASONS 91239948 Nikki Wooldridge dba Game of Seasons Withdrawal of application
2018 NIGHTKING   91239295 Shenzhen Dakang Shengshi Technology Co., Ltd. Default
2018 GAME OF STEAM   87578468 and 87578871 SmartCreo, Inc. Registered
2017 GAME OF DRONES 87287627 Scott Billups Withdrawal of application
2017 PURGE OF THRONES 91234829 Conglomerate Media LLC Withdrawal of application
2017 GAME OF HOMES 91233917 Kevin Kemble Default
2017 GAME OF TONES 91232701 Rare Earth Dynamics, Inc. Default
2016 GAME OF STONERS 91230051 Game of Stoners dba Paper Street Capital LLC Default
2016 GAME OF CLONES   86936627 David Persing Withdrawal of application
2016 GAME OF DRONES   91228977 Kismet Media Group Default
2016 GAME OF CRAYONS   86875064 Scott Severance Registered
2016 GAME OF POND   86849459 Steven Crosby, Jr. Withdrawal of application
2016 GAME OF MONARCHS   91227362 B&B Biz Corp. Opposition withdrawn; no SOU filed
2016 GAME OF TROLLS   91227002 Dreamworks Animation L.L.C. Default
2016 GAMETHRONE   91226315 Steiger Dynamics LLC Withdrawal of application
2016 GAME OF PHONES 86691920 Game of Phones, LLC Withdrawal of application
2015 LEAGUE OF THRONES 91223921 Zachary Capp and Jonathan Goldsmith Withdrawal of application
2015 GAME OF STONES 86594692 Andrew Howarth Withdrawal of application
2015 GAME OF WAR 86521836 Machine Zone, Inc. Registered
2015 GAME OF DRONES 91222199 Ballistic UAV, Inc. Withdrawal of application
2015 THREE-EYED RAVEN 91221878 Opposed by Franciscan Vineyards, Inc. (vs. HBO) Withdrawal of application by HBO
2015 GAME OF THRONES 86500697 and 86309080 Extensions by Fantasy Flight Publishing, Inc. (vs. HBO) Registered by HBO
2015 GAME OF HOMES 86287086 Scripps Networks, LLC Withdrawal of application
2015 ERA OF THRONES 86345522 Ravcorp Limited Withdrawal of application
2014 GAME OF ARMS   86253454 AMC Film Holdings LLC Withdrawal of application
2014 CLASH OF THRONES   91215210 337 Technology Limited Default
2013 DROGON 85936732 Desnoes & Deddes Limited (vs. HBO) Withdrawal of application by HBO
2012      
2011      

Finding the Right Ingredient – Finding Model 2(e)(1) Refusal Responses

You represent a client with a successful new Spanish-style restaurant chain, called “Saffron.” You helped file a trademark application for the mark for restaurant services, and the Examining Attorney issued a 2(e)(1) refusal, noting that saffron is an ingredient in some of the dishes served at the restaurant and concluding that it is thus merely descriptive of the restaurant services. How do you push back?

One great way is to look at the responses of other applicants who dealt with very similar objections, and successfully overcame them. Go to “Search” and then the “Office Action” tab. We’re looking for active registrations in Class 43 on the Principal Register that faced a 2(e)(1) refusal where the Examiner focused on the “ingredient” issue. Your search will look something like the strategy below:

The search yields over 600 relevant documents; on the first page of results alone, we have registrations like RED CHERRY, YUZU SUSHI, LA TAGLIATELLA, PICKLED LEMON, RED MANGO, MARGARITA COMPANY, and more; the second page yields more great examples like AOILI (stylized), BLACK GARLIC, FILINI, BONE & BROTH, and more.

We searched for outgoing Office Actions to hone in on the Examiner’s concerns, but finding relevant responses is simply. Click “Documents” to get a full list of TSDR history, and just click into the next Office Action Response to see how the applicant addressed the issue.

If you find a good example you like, click the magnifying glass and select the “Text” option – you can copy and paste plain text from this document to get your own arguments started.

The next time you face an Office Action with a unique fact pattern, make sure to use TM TKO to kick start your research to find and build on proven successful responses!